WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

America Online Inc. v. Neticq.com Ltd

Case No. D2000-1606

 

1. The Parties

The Complainant is America Online Inc., a Delaware corporation with its principal place of business at 22000 AOL Way, Dulles, Virginia, U.S.A. The Complainant is represented by Mr James R Davis II of Arent Fox Kintner Plotkin & Kahn, Attorneys of Washington DC, U.S.A.

The Respondent is Neticq.com, Room 1008, Kowloon Plaza, 485 Castle Peak, No. 418, Road, Cheung Sha Wa, Kowloon, Hong Kong, SAR of China. The Respondent is represented by Mr Barry Yen of Soo Keung Yip & Sin, Solicitors, Hong Kong, SAR of China.

 

2. The Domain Name and Registrar

The domain name at issue is <neticq.com>. The domain name is registered with Network Solutions Inc., 505 Huntmar Park Drive, Herndon, Virginia 20170, U.S.A. ("NSI"). It was registered in December 1999.

 

3. Procedural History

The Complaint submitted by America Online Inc. was received on November 20, 2000, (electronic version) and November 24, 2000, (hard copy) by the World Intellectual Property Organization Arbitration and Mediation Center ("WIPO Center").

On November 24, 2000, a request for Registrar verification was transmitted by the WIPO Center to NSI, requesting it to:

Confirm that a copy of the Complaint had been sent to it by the Complainant as requested by WIPO Supplemental Rules for Uniform Dispute Resolution Policy ("Supplemental Rules"), paragraph 4(b).

Confirm that the domain name at issue is registered with NSI.

Confirm that the person identified as the Respondent is the current registrant of the domain name.

Provide full contact details, i.e., postal address(es), telephone number(s), facsimile number(s), email address(es), available in the Registrarís WHOIS database for the registrant of the disputed domain name, the technical contact, the administrative contact and the billing contact for the domain name.

Confirm that the Uniform Domain Dispute Resolution Policy ("UDRP") was in effect.

Indicate the current status of the domain name.

By email dated November 30, 2000, NSI advised WIPO Center as follows:

NSI had received a copy of the Complaint from the Complainant.

NSI is the Registrar of the domain name registration <neticq.com>.

Neticq.com is shown as the "current registrant" of the domain name at the above address.

The administrative technical and billing contact is HK Net Co. Ltd. of 15/F, Tower 2, Ever Gain Plaza, 88 Container Port Road, Kwa Chung, NT, Hong Kong.

NSIís 5.0 Service Agreement is in effect.

The domain name registration <neticq.com> is currently in "Active" status.

NSI has currently incorporated in its agreements the Uniform Domain Name Dispute Resolution Policy adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN").

The advice from NSI that the domain name in question is still "active" indicates that the Respondent has not requested that the domain name at issue be deleted from the domain name database. The Respondent has not sought to terminate the agreement with NSI. Accordingly, the Respondent is bound by the provisions of NSIís Domain Name Dispute Resolution Policy, i.e., the ICANN Policy. The Respondent has not challenged the jurisdiction of the Panel.

Having verified that the Complaint satisfied the formal requirements of the ICANN Policy, the WIPO Center on December 13, 2000, transmitted by courier, email and facsimile a Notification of Complaint and Commencement of Administrative Proceedings to the Respondent. A copy of the Complaint was also emailed to NSI and ICANN.

The Complainant elected to have its Complaint resolved by a single panel member. It has duly paid the amount required of it to the WIPO Center.

The Respondent was advised that a Response to the Complaint was required within 20 calendar days (i.e., by January 1, 2001). The Respondent was also advised that any Response should be communicated, in accordance with the Rules, by hard copy (one original and four sopies) and by email. A Response was filed by the Respondent on December 28, 2000 (electronic) and January 3, 2001 (hard copy).

On January 11, 2001, the WIPO Center invited the Honorable Sir Ian Barker QC of Auckland, New Zealand to serve as Sole Panelist in the case. It transmitted to him a statement of acceptance and requested a declaration of impartiality and independence.

On January 12, 2001, the Honorable Sir Ian Barker QC advised his acceptance and forwarded to the WIPO Center his statement of impartiality and independence. The Panelist finds that the Administrative Panel was properly constituted in accordance with the Rules and the Supplemental Rules.

On January 12, 2001, WIPO Center forwarded to the Honorable Sir Ian Barker QC by courier the relevant submissions and the record. These were received by him on January 17, 2001. In terms of Rule 5(b), in the absence of exceptional circumstances, the Panel would have been required to forward its decision by January 25, 2001. The Respondent had included amongst the annexures to its Response, some documents in several different languages. Upon application having been made by the Complainant, the Panel ordered the Respondent to provide translations of these documents within seven (7) days of notification of this order. The Complainant was given three (3) working days thereafter within which to reply to matters advised in the translated documents. The Respondent supplied translations of some of the documents, said to cover only the most important articles. The Complainant exercised its right to reply to these. The Respondent sought and was given leave to reply to certain matters in the Complainantís reply. These were received by the Center on February 1, 2001. Because of the numerous additional documents requiring to be considered by the Panel, the date for rendering the Panelís decision has been extended to

February 15, 2001.

The Panel has independently determined and agrees with the assessment of WIPO Center that the Complaint meets the formal requirements of the Rules for Uniform Domain Name Dispute Resolution Policy as approved by ICANN on October 24, 1999, ("the Rules") and the Supplemental Rules.

The language of the administrative proceeding is English, being the language of the registration agreement.

 

4. Factual Background

The Complainant is the owner of 21 trademark registrations worldwide for the mark "ICQ" in numerous countries (including China). It has pending trademark applications in some 50 other countries, including the United States. The mark has been used since 1996 in connection with telecommunications services, namely, services relating to electronic transmission of data, images and documents via computer terminals, electronic storage and retrieval of data, images and documents via computer terminals, electronic storage and retrieval of data and documents, electronic mail services, facsimile transmission, personal communication services, paging services and messaging services; computer operating programs that may be downloaded from a computer information network; computer software and prerecorded computer programs for accessing computer networks and computer systems comprising computer hardware and computer software for electronic communications that may be downloaded from a computer information network; and computer software for accessing online electronic diaries, online databases, websites, online chatrooms, and electronic yellow pages that may be downloaded from a computer information network; and computer services, namely, providing multiple user access to computer information networks and online communication networks; providing on-line services, namely, electronic yellow pages and providing general interest information via computer networks.

The Complainant also owns numerous trademarks, service marks and trade names, which include the mark "ICQ" (e.g., "ICQ Phone", "ICQ Radio"). It uses the mark "icq.com" as the domain name for its portal website. "ICQ" marks are used extensively at this portal website.

From at least as early as 1996, the Complainant and its predecessor in interest adopted and began using ICQ marks in connection with computer on-line and other internet-related services. The mark ICQ is used with a program on the internet to let a user know when one of his other friends is also online, thus facilitating chat sessions, play games etc.

With some 100 million subscribers worldwide, the Complainant claims to be the worldís largest on-line communications provider, with millions of people worldwide obtaining services offered under "ICQ" marks.

Advertising and promotions in a variety of languages expose many millions more to ICQís offerings with the result that ICQís mark is well known in many countries of the globe. The Complainantís sales have amounted to many millions of dollars, with large sums having been spent by it in promotional activities and in development.

The Respondent has never been licensed by the Complainant to have any interest in any of its marks.

On July 6 and October 6, 2000 the Complainantís lawyers wrote to the Respondent informing it of the Complainantís intellectual property rights and objecting to its use of the disputed domain name. The letters were returned as undeliverable. The Respondent claims it did not receive the letter of July 6. It did change its address in September 2000.

The Respondentís website provides communications services said by the Complainant to be similar to those offered by the Complainant. The Respondent claims its services are different. The ICQ mark is used prominently at the Respondentís website (e.g. Register an IC#). It states that the Respondentís Neticq service is an ICQ compatible program.

 

5. Partiesí Contentions

The Complainant submits:

(a) Apart from the letters "net", the domain name is identical or confusingly similar to its numerous ICQ marks;

(b) The Respondent has no rights or legitimate interests in respect of the domain name, but is using it to capitalize on the Complainantís mark and goodwill;

(c) Registration and use in bad faith is shown by:

(i) The registration of the domain name by the Respondent in December 1999, years after the Complainantís first use of the mark "ICQ";

(ii) The Respondentís provision of identical services to those provided by the Complainant under the ICQ mark;

(iii) The worldwide fame of the Complainantís mark which must have been known to the Respondent at the date of registration;

(iv) The Respondentís website which indicates a connection between the website and the Complainantís by stating "Register an ICQ#" and "Register new ICQ account Ė NEW";

(v) The prominent reference in the disputed name to the Complainantís mark directs potential customers away from the Complainant;

(vi) Other UDRP panelists have determined that the Respondentís actions demonstrated bad faith;

(vii) The translations of documents provided by the Respondent show how a user can use Net ICQ to access the ICQ service, demonstrating that the Respondentís service was created and marketed to confuse customers into thinking there is some relationship between Net ICQ and ICQ;

(viii) The translated documents provided show that in the Respondentís promotional material, the ICQ portion of the word "Net ICQ" is emphasised by the use of capital letters;

(ix) Similar issues were decided in favour of the Complainant in WIPO decision D2000-0810 where the Panel held that the Respondent in that case had registered <topicq.com> in bad faith.

The Respondent submits:

(i) The disputed domain name is distinguishable from the mark ICQ;

(ii) The first element of the mark is distinguishable Ė i.e., "net", a component absent in ICQ: Because of a tendency of English speakers to slur the ends of words, the first syllable is the most important for the purpose of distinguishing marks. See Warsteiner Braverc Haus Application [1999] ETMR 225 and London Lubricantís (1920) Ltdís Application, (1925) 42 RPC 264.

(iii) Neticq is pronounced as ("Net Ik"), whilst ICQ is pronounced "I seek you". Counsel referred to decisions of the Australian Trade Mark Commissioner which allowed registrations for the marks "ICQ", "netiq" and "Ubinetics" to co-exist;

(iv) ICQ indicates a searching service but "neticq" has no meaning other than a reference to Respondentís products and services. Marks expressing different ideas can co-exist; see Shanahan, "Australian Law of Trade Marks and Passing Off" (1990) at pp174-5;

(v) The term ICQ has become generic and indistinctive like "Internet" and "Aspirin" and "Yo-yo". The word has entered the language in the same way as "fax" and "telephone" and is used as a common noun, verb or adjective. The Respondent presented examples of such use allegedly from printouts of university website articles. E.g. "Then just ICQ her to ask what she is wearing". Also an ICQ number is like a fax or telephone number. The Complainant uses the term ICQ in a generic way;

(vi) ICQ can represent other meanings, e.g. "International Comet Quarterly" or an Italian company, "Fin-Eco Banca ICQ S.p.a.";

(vii) The Respondentís service is a "revolutionary method of instant messaging" which has been internationally recognized as such;

(viii) The Respondent has targeted Hong Kong where its services have become known by the disputed name. E.g. an article includes the sentence: "She plays ICQ for four hours each night";

(ix) The Respondent makes no commercial gain. Its services are free to internet users. It has no intention to divert users from the Complainant by misleading conduct. Its instant messaging service is different from the Complainantís;

(x) The other WIPO cases involving the Complainant are not relevant to this case;

(xi) The Respondent has a bona fide intention of providing its own service and did not register the name with the intent of selling or renting the name or to compete with the Complainant;

(xii) The Respondent is commonly known by the disputed domain name and does not intend to deflect customers from the Complainant.

 

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel to:

"decide a complaint on the basis of the statements and documents submitted in accordance with the policy, these rules and any rules and principles of law that it deems applicable".

The burden for the Complainant, under paragraph 4(a) of the ICANN Policy, is to show:

- That the domain name registered by the Respondent is identical or confusinglysimilar to a trademark or service mark in which the Complainant has rights; and

- That the Respondent has no legitimate interests in respect of the domain name; and

- That the domain name has been registered and used in bad faith.

The domain name <neticq.com> is, in the judgment of the Panel, confusingly similar to the Complainantís mark ICQ. The addition of the letters "net" does nothing to deflect the impact on the viewer of the mark "ICQ". I refer to the Panelís discussion of relevant trademark law in AT&T Corp v Tala Alamuddin (WIPO Case No. D2000-0249) some of which is worth repeating here:

"In determining whether the domain name is confusingly similar to the Complainants marks, the Panel has had regard to various tests in trademark law as to when a mark may not be registered where "the useÖ would be likely to deceive or cause confusionÖ". (These words cited, or similar, are to be found in the trademark statutes in several jurisdictions). Out of many cases, the following principles relevant to the present situation emerge:

All surrounding circumstances have to be taken into account, including the circumstances where the Complainantsí mark is likely to be used, the relevant market and the character of those involved in the market. See Polaroid Corporation v Hannaford and Burton Ltd [1975] 1 NZLR 566 and Hi-Bred Corn Company v Hy-Line Chicks Pty Ltd [1978] 2 NZLR 50.

The word "deceive" implies the creation of an incorrect belief and "causing confusion" may go no further than mixing up or perplexing the minds of the purchasing public: New Zealand Breweries Ltd v Heineken [1964] NZLR 115. Where deception or confusion is alleged as to the source of the goods, "deceived" is equivalent to being misled into thinking that the goods bearing the Complainantsí mark come from some other source and "confused" indicates being caused to wonder whether that may not be the case (Hi-Bred Corn case).

Although the marks must be compared as a whole in determining confusion, when each mark has a common feature, greater attention needs to be focused on the remaining parts of the marks: re Broadheadís Application (1950), 67 RPC 209, 215.

Allowances must be made for imperfect recollections on the part of members of the public and the effect of careless speech (re Rystaís Application (1943), 60 RPC 87, 188-9; Polaroid (supra) at 571).

The overall test is one of impression of confusion in the mind of the adjudicator making the decision: General Electric Co. v General Electric Co. Ltd [1972] 1 WLR 729, 738: [1973] RPC 297.

Where an application is to be rejected on the ground of confusion, the Court (or Panel) must be satisfied that there is a real danger of confusion (Berlei (UK) Ltd v Bali Brassiere Co Inc. [1969] 1 WLR 1306: [1969] RPC 472)."

The addition of a word like "net", which is a basic term in the IT vocabulary, strengthens the impression that the domain name is associated with or controlled by ICQ, which has a worldwide reputation in the IT industry. The Panel adopts with respect the reasoning of the learned panelist in D2000-0810, America Online Inc v Go2 North.com.Inc. That was a case where the domain names "topicq.com" and "ticq.com" were found to be confusingly similar to the Complainantís ICQ mark.

The Panel is not impressed by the Respondentís references to trademark cases in dissimilar circumstances. These do not assist the case of the Respondent. In the end, it comes down to the assessment of the particular adjudicator Ė in this case a WIPO panelist Ė whether the mark and the domain name are confusingly similar. The panel concludes that any user of the internet would be confused into thinking that there was a connection between the domain name and the Complainantís internationally recognized mark.

Nor does the Panel think it proved that "ICQ" has yet entered the language in the way of Aspirin or Yo-yo. ICQís worldwide fame has turned the letters ICQ into a well-recognized brand associated with the Complainant. The Complainantís marks are so closely associated in the public mind with the Complainant, that any use of the mark in a situation would be likely to deceive. In Radio Corporation Pty Ltd v Disney (1937), 57 CLR 448, the High Court of Australia refused registration of the marks "Mickey Mouse" and "Minnie Mouse" for radio-receiving kits on the grounds that the words were so closely associated in the public mind with Walt Disney.

The principle decided in that case more than 60 years ago, (long before the revolution in information technology), applies equally to the Complainantís mark. The judgments in the Disney case show that the likelihood of deception would have occurred no matter what the nature of goods to which the names were sought to be attached.

Genericism may be a ground for cancellation of a registered trademark in certain circumstances set out in statute in a particular jurisdiction. However, such considerations do not apply under the Policy. The Panel can only decide whether the disputed domain name is identical or confusingly similar to a registered mark. If it is, then the first of the Policyís criteria is satisfied. The Panel finds the first criterion satisfied in this case.

Nor does the Panel consider that the Respondent has any rights or legitimate interests in the disputed domain name. The Complainant gave it none. That finding would normally be sufficient for the Complainant to discharge the initial evidential burden. Paragraph 4(a)(ii) of the Policy indicates that a Respondent can demonstrate rights or legitimate interests in the domain name. Thus:

(i) before any notice to you of the dispute, your use of or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services; or

(ii) you (as an individual, business or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly direct customers or to tarnish the trademark or service mark at issue.

It is hard to see that any use by the Respondent of the disputed domain name at any time could possibly be bona fide, given the Complainantís pervasiveness in the world IT market. Any person in the industry, such as those controlling the Respondent, must have known before December 1999 about ICQís pre-eminence and role in the IT industry. The inference from the Respondentís conduct is that it sought to take advantage of the Complainantís mark and reputation in setting up its IT business by deliberately using the mark in the hope of attracting users to its website.

It does not really matter whether the Respondentís messaging system is the same as the Complainantís or not . Both systems are part of the information technology market: any user is likely to be attracted to the Respondentís services by the letters ICQ which imply some affiliation with or sponsorship by the Complainant.

The attempts by the Respondent to ascribe other meanings to the letters ICQ are fanciful (e.g., "Individual Census Questionnaire"). Nor is it proved that the Respondent is commonly known as "neticq". The fact that it incorporated a company with that name does not excuse its attempts to "cash in" on the reputation and marks of the Complainant. Nor does it matter that the Respondent targets only people in Hong Kong. The internet is worldwide. The Respondentís website can be accessed by anyone, anywhere, who would be justified when so doing in assuming some connection between the Respondent and the Complainant.

It is also hard to accept that the Respondent is making no commercial gain as it alleges. Although it may not charge internet users, it still must make profits in indirect ways - otherwise it would not stay in business. The Respondent claims that its online messaging service and advertising service are free of charge to internet users. It is hard to see how its operation can be characterised as a legitimate non-commercial or fair use of the domain name. "Commercial" use does not refer solely to operations for profit. There is no proof of any philanthropic or charitable motivation from the Respondent. "Commercial" may simply mean in "the course of business".

Paragraph 4(b) of the ICANN Policy states:

"For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainantís mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location."

It should be noted that the circumstances of bad faith are not limited to the above.

The Panel considers that the Respondent has registered and used the domain name <neticq.com> in "bad faith" for the reasons set out in its summary of the Complainantís submissions and in particular:

(a) The name <neticq.com> appears obviously connected with the Complainantís IT services provided worldwide.

(b) The Respondent must have known of the Complainantís mark and reputation when it registered the name in December 1999. One has only to ask why it included in its name the term <icq> instead of including something with no relation to the Complainantís marks.

Accordingly, for all the various reasons discussed above, the Panel finds that the domain name <neticq.com> has been registered and is being used by the Respondent in bad faith.

 

7. Legal Considerations

Although entitled to consider principles of law deemed applicable, the Panel finds it unnecessary to do so in any depth. The jurisprudence that is being rapidly developed by a wide variety of WIPO Panelists under the ICANN Policy provides a fruitful source of precedent. Attempts to utilize names with worldwide acceptance have been discouraged. The decision D2000 Ė 0810, cited earlier, is but one example.

 

8. Decision

For the foregoing reasons, the Panel decides:

(a) That the domain name registered by the Respondent is identical or confusingly similar to the trademark to which the Complainant has rights; and

(b) That the Respondent has no rights or legitimate interests in respect of the domain name; and

(c) That the Respondentís domain name has been registered and is being used in bad faith.

Accordingly, pursuant to paragraph 4(i) of the Policy, the Panel requires that the registration of the domain name <neticq.com> be transferred to the Complainant.

 


 

Hon. Sir Ian Barker QC
Sole Panelist

Dated: February 12, 2001